Apple's Argument and the District Court's Finding re D'889 Validity

 As mentioned in a previous post, Apple grouped the three design patents together and discussed their likely validity very briefly. However, at the same time, Apple could have expanded on this topic through declarations and replies, after it had received Samsung’s opposition brief. Regardless, the information we have available is from the original motion that contained a very sparse section, arguing the likely validity of all three design patents. Apple referred to the PTO prosecution for the D’889 patent where the patent was granted despite prior art references. Additionally, Apple’s argument did include news reports and reviews to further support the novelty of the iPad (embodying the D’889).

 
Samsung had argued that the D’889 patent was obvious, and the district court found this argument to be convincing. Samsung brought forth a 1994 Fidler tablet as a primary reference. The court agreed with Samsung that the Fidler tablet was a primary reference. Here, Apple protested. Apple pointed to several differences between the D’889 and the Fidler tablet—the court termed these minor ones and Apple disagreed. Apple referenced the flat glass surface in its D’889 patent that was not in the Fidler tablet. To Apple, the fact that the Fidler tablet did not have a flat glass surface prevented it from acting as a primary reference. The district court rejected this argument. From my reading of the opinion, it seems as though the court was very focused on the fact that the glass surface was just one element of the design patent; without more elemental differences, it could not disqualify Fidler as a primary reference. This seems strange, since the focus of the primary reference inquiry is on the overall visual appearance of the reference, as opposed to a comparison of individual elements. 
 
Nonetheless, to the district court, “[e]ssentially, it seems as though Apple is arguing for the primary reference to be ‘substantially the same’ as the patent in suit. Apple’s argument that one design element may be sufficient to defeat obviousness risks collapsing the obviousness inquiry into the anticipation inquiry” (Court Order Denying Motion for Preliminary Injunction at 41).
 
The district court also found Samsung’s expert report on the obviousness topic to be persuasive. Samsung’s expert argued that he would have found the D’889 tablet design to be obvious in light of the combination of the Fidler reference and secondary references. To the court, this conclusion was convincing, and it found that a person of ordinary skill in the art would have found the D’889 patent to be obvious in light of the Fidler tablet and secondary references. As a result, the district court declared that Samsung had raised substantial questions about the D’889 patent’s invalidity. It is unclear why the district court found this particular expert’s report to be so convincing.
 
With regard to Apple’s evidence consisting of news reports and reviews (secondary considerations), the court dismissed these arguments. For one, the court simply found that Samsung’s prior art references presented a stronger case than evidence of secondary considerations. Another reason involved Apple’s failure to show a connection between the design in D’889 and Apple’s commercial success in the iPad. Essentially, for patent holders, a lesson is that secondary considerations can be strong evidence that shows non-obviousness, but the patent holder must demonstrate how the patent subject matter is connected to the secondary consideration. Practitioners should also be sure to have very strong arguments that are predicated on the prior art references. Secondary considerations may not always be sufficient in demonstrating novelty when the opponent presents a strong case based on prior art. All the Graham factors are meant to be equal. However, it seems as though courts are reluctant to base an obviousness inquiry on secondary considerations.
 
Given that the district court found that Samsung had substantial questions about the invalidity of the D’889 patent, the court denied Apple’s request for an injunction against the Samsung Tab 10.1 on the basis of the Samsung tablet’s infringement of D’889.
 
The next blog will discuss the Federal Circuit’s appellate opinion on this validity topic. Please see the previous post: Apple’s Argument and the District Court Decision re D’889 Infringement for more on this topic. For more on emergency business litigation, click here or call 312-223-1699 to speak with one of our Chicago law firm attorneys.
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